THE ST. XXXXXXXX SEAWAY CORPORATION - 8-K - Current Report Date Filed: 2/8/2002
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AGREEMENT
This Agreement, made and effective as of January 24, 2002 ("the Effective Date") is by and
between:
NEW YORK UNIVERSITY (hereinafter "NYU"), a corporation organized and existing under the
laws of the State of New York and having a place of business at 00 Xxxxxxxxxx Xxxxxx Xxxxx, Xxx
Xxxx, Xxx Xxxx 00000
AND
St. Xxxxxxxx Seaway Corporation (hereinafter "CORPORATION"), a corporation organized and
existing under the laws of the State of Indiana having its principal office at 000 X. Xxxxxxxx Xx.,
Xxxxx 000, Xxxxxxxxxxxx, Xxxxxxx.
RECITALS
WHEREAS, NYU is willing to perform the NYU Research Project (as hereinafter defined);
WHEREAS, CORPORATION is prepared to sponsor the NYU Research Project;
NOW, THEREFORE, in consideration of the mutual promises and agreements contained herein,
the parties hereto hereby agree as follows:
1. DEFINITIONS
Whenever used in this Agreement, the following terms shall have the following meanings:
a. "License Revenue" shall mean any money or other consideration received by NYU from
licensing, assigning, or otherwise commercializing the NYU Patents (as hereinafter
defined), including, but not limited to license issuance or maintenance fees, royalties
on sales, and milestone and success or achievement payments, but expressly excluding
any funding NYU receives, the use of which is restricted to fund further research at
NYU related to the NYU Research Project, or reimbursement for patent or other expenses
incurred by NYU related to the NYU Patents. License Revenue shall not include any stock
NYU receives from licensing the NYU Patents, unless and until such stock is or becomes
publicly traded through registration under the Securities Act of 1933, or otherwise,
but shall include any net cash proceeds NYU receives from selling such non-public
stock, at such time as NYU at its sole discretion sells such stock.
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b. "NYU Patents" shall mean U.S. Patent Application Serial No. 60/225.618, entitled
"Androgen Receptor Transcriptional Coregulatory Proteins as Targets for Androgen
Receptor-Dependent Diseases" and any non-provisional, continuation, successor,
divisional, or foreign counterpart application thereof, or any patents issuing thereon.
c. "NYU Research Project" shall mean the investigations during the Research Period (as
hereinafter defined) under the supervision of Drs. Xxxxxxx Xxxxxxxxxx and Xxxxx Xxxxxx
(hereinafter "the NYU Scientists") in accordance with the research program, described
in annexed Appendix I, which forms an integral part hereof.
d. "Option" shall mean the option for CORPORATION to fund the NYU Research Project during
the third, fourth, and fifth years following the Effective Date, in accordance with
Paragraph 4.b.
e. "Option Period" shall mean the period of twenty-one (21) months following the Effective
Date; provided however that (i) if CORPORATION exercises its Option to fund the third
year of the NYU Research Project pursuant to Paragraph 4.b, then the Option Period
shall be extended to be the period of thirty (30) months following the Effective Date;
and (ii) if CORPORATION exercises its Option to fund the fourth year of the NYU
Research Project between pursuant to Paragraph 4.b, then the Option Period shall be
extended to be the period of forty-two (42) months following the Effective Date.
f. "Research Period" shall mean two (2) year period commencing on the Effective Date
hereof and, if CORPORATION exercises the Option in accordance with Paragraph 4.b, an
additional period of up to three (3) years ("Additional Years") commencing on the
second anniversary of the Effective Date.
2. EFFECTIVE DATE
This Agreement shall be effective as of the Effective Date and shall remain in full
force and effect until it expires or is terminated in accordance with Section 9 hereof.
3. PERFORMANCE OF THE NYU RESEARCH PROJECT
a. In consideration of the sums to be paid to NYU as set forth in Section 4 below, NYU
undertakes to perform the NYU Research Project under the supervision of the NYU
Scientists during the Research Period. If, during the Research Period both of the NYU
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Scientists shall cease to supervise the NYU Research Project, then NYU shall endeavor
to find from among the scientists of NYU a scientist or scientists acceptable to
CORPORATION to continue the supervision of the NYU Research Project in place of the NYU
Scientists ("Successor Scientists"). Such Successor Scientists are to be in place
within forty-five (45) days, provided, however, that nothing herein contained shall be
deemed to impose an obligation on NYU to find a replacement for the NYU Scientists, and
in such event Corporation's sole remedy will be to terminate this Agreement.
b. Nothing contained in this Agreement shall be construed as a warranty on the part of NYU
that any results will be achieved by the NYU Research Project, or that the results
achieved, if any, are or will be commercially exploitable and furthermore, NYU makes no
warranties which may be achieved in the NYU Research Project.
c. Within sixty (60) days after the end of each year of the Research Period, NYU shall
prepare a written report summarizing the results of the work conducted on the NYU
Research Project during the preceding year ("Research Report").
d. NYU will have full authority and responsibility for the NYU Research Project. All
students and employees of NYU who work on the NYU Research Project will do so as
employees or students of NYU, and not as employees of CORPORATION.
4. FUNDING OF THE NYU RESEARCH PROJECT.
a. As compensation to NYU for work to be performed on the NYU Research Project during the
Research Period, CORPORATION will pay NYU the total sum of $200,000 payable in 8 equal
consecutive quarterly installments of $25,000 each, commencing upon the Effective Date
and on or before the beginning of each quarter year thereafter during the term of the
Research Period.
b. CORPORATION shall have the Option, exercisable only by written notice to NYU prior to
the expiration of the Option Period, to fund the NYU Research Project during the third,
fourth, and fifth years following the Effective Date. The CORPORATION may during the
Option Period elect (i) to fund the third, fourth, and fifth years of the NYU Research
Project or (ii) to fund the third year of the NYU Research Project. If CORPORATION
exercises its Option to fund the third year of the NYU Research Project, then
CORPORATION shall have the further Option to fund the NYU Research, then CORPORATION
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shall have the further Option to fund the NYU Research Project for the fourth year of
the NYU Research Project and the Option Period shall be extended as set forth in
Paragraph 1.e(i). If CORPORATION exercises its Option to fund the fourth year of the
NYU Research Project, then CORPORATION shall have the further Option to fund the NYU
Research Project for the fifth year of the NYU Research Project and the Option Period
shall be extended as set forth in Paragraph 1.e(ii). If CORPORATION so exercises its
Option, CORPORATION will pay NYU $100,000 for each additional year that it funds the
NYU Research Project, for a total additional sum of $300,000 if all three additional
years of the NYU Research Project are funded by the CORPORATION, all to be in addition
to the amounts paid under Paragraph 4.a., and to be payable in 12 equal consecutive
quarterly installments of $25,000 each, commencing upon the second anniversary of the
Effective Date and on or before the beginning of each quarter year thereafter during
the term of the Research Period. Notwithstanding anything else herein, the CORPORATION
may earlier exercise the Option to fund all Additional Years at any time within the
Option Period, including any extensions of the Option Period as defined in Paragraph
1.e(i) or 1.e(ii).
c. Nothing in this Agreement shall be interpreted to prohibit NYU (or the NYU Scientist)
from obtaining additional financing or research grants for the NYU Research Project
from government agencies, which grants or financing may render all or part of the NYU
Research Project and the results thereof subject to the patent rights of the U.S.
Government and its agencies, as set forth in Title 35 U.S.C. Section 200 et seq., or
from any other entity, provided that such agreement or financing does not modify the
CORPORATION's rights hereunder.
5. TITLE
a. All right, title and interest, in and to any results, drawings, plans, diagrams,
specifications, and other documents arising out of the NYU Research Project shall vest
solely in NYU.
b. Any and all inventions made by the NYU Scientists and/or by employees or students of
NYU shall be owned solely by NYU.
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6. PATENTS AND PATENT APPLICATIONS
a. NYU shall prosecute the NYU Patents at its own expense and shall use reasonable efforts
to prosecute and protect the NYU Patents, but shall otherwise take such actions in its
sole discretion.
b. Nothing herein contained shall be deemed to be a warranty by NYU that
i) NYU can or will be able to obtain any patent or patents on any patent application
or applications in the NYU Patents or any portion thereof, or that any of the NYU
Patents will afford adequate or commercially worthwhile protection, or
ii) that the manufacture, use, or sale of any element of the NYU Patents will not
infringe any patent(s) of a third party. If NYU shall receive infringement indemnity
from a party seeking to license and commercialize the NYU Patents, NYU shall endeavor
to have such indemnity available to the CORPORATION.
c. If at any time during the term of this Agreement NYU decides that it is undesirable, as
to one or more countries, to prosecute or maintain any patents or patent applications
within the NYU Patents, it shall give written notice thereof to CORPORATION, and upon
receipt of such notice CORPORATION shall have the right by written notice to NYU to
have NYU continue to prosecute or maintain such patent application or patent at
CORPORATION's expense.
7. COMMERCIALIZATION OF NYU PATENTS.
a. NYU shall have the sole right to commercialize the NYU Patents at NYU's sole
discretion, through licensing or assigning the NYU Patents to for-profit third parties
or otherwise, and at the request of the CORPORATION, shall keep the CORPORATION
reasonably apprised of decisions and actions in this regard.
b. NYU shall pay to CORPORATION a percentage of any License Revenue actually received by
NYU equal to:
i) One and one-half percent (1.5%) if CORPORATION has not previously exercised the
Option; and
ii) An additional three-quarters percent (0.75%) for each of the Additional Years
for which the Corporation has exercised the Option, for a total amount of three and
three-quarters percent (3.75%) if CORPORATION has previously exercised the Option for
all three Additional Years.
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c. NYU shall pay CORPORATION any amounts due under Paragraph 7.b within sixty (60) days
after receipt by NYU of any License Review.
d. CORPORATION shall have no right to undertake any use of the NYU Patents and shall have
no license to the NYU Patents.
8. PUBLICATION
a. NYU and the NYU Scientist shall be free to publish the results of the Research Project.
9. EXPIRY AND TERMINATION
a. Unless earlier terminated pursuant to this Section 9.b or 9.c below, this Research
Agreement will terminate upon the expiration of the Research Period; provided that the
provisions of Sections 7, 8, 11, 12, 13 and 14 hereof shall survive and remain in full
force and effect after any expiration, cancellation or of this Agreement, including
early termination as set forth below.
b. At any time prior to expiration of this Agreement pursuant to Section 9.a. hereof, any
party may terminate this Agreement for cause, as "cause" is described below, by giving
written notice to the other party. Cause for termination by one party of this Agreement
shall be deemed to exist if the other party materially breaches or defaults in the
performance or observance of any of the provisions of this Agreement and such breach or
default is not cured within sixty (60) days after receipt of written notice thereof
from the non-breaching party. In addition, CORPORATION shall have the right to
terminate this Agreement (i) on written notice if Successor Scientists are not retained
as required by Section 3(a), or (ii) on written notice if NYU gives notice under
Section 6(c) that it wishes to discontinue prosecution and maintenance of all patents
and patent applications within the NYU Patents in the United States.
c. Any party to this Agreement may, upon giving notice of termination, immediately
terminate this Agreement upon receipt of notice that any party has become insolvent or
has suspended business or has filed a voluntary petition or an answer admitting the
jurisdiction of the U.S. Bankruptcy Court in the material allegations of, or has
consented to, an involuntary petition purporting to be pursuant to any reorganization
or insolvency law of any jurisdiction, or has made an assignment for the benefit of
creditors or has applied for or consented to the appointment of a receiver or trustee
for a substantial part of its property.
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d. Any amount payable hereunder by CORPORATION to NYU, which has not been paid by the date
on which such payment is due, shall bear interest from such date until the date on
which such payment is made, at the rate of two percent (2%) per annum in excess of the
prime rate prevailing at the Citibank, N.A., in New York, New York, during the period
of arrears.
e. Termination of this Agreement shall not relieve the parties of any obligation to the
other party incurred prior to such termination.
10. NO ASSIGNMENT
Neither CORPORATION nor NYU shall have the right to assign, delegate or transfer at any
time to any party other than an Affiliate, in whole or in part, any or all of the
rights, duties and interest herein granted without first obtaining the written consent
of the other to such assignment, which consent shall not be unreasonably withheld. As
used herein, the term "Affiliate" shall mean any company or other legal entity which
controls, or is controlled by, or is under common control with, the assigning party;
control means the holding of greater than fifty percent (50%) of (i) the capital and/or
(ii) the voting rights and/or (iii) the right to elect or appoint directors.
11. CONFIDENTIAL INFORMATION
CORPORATION shall maintain any and all results of the NYU Research Project and
information related to the NYU Patents provided by NYU hereunder ("NYU Information") in
confidence and shall not release or disclose any tangible or intangible component
thereof to any third party without first receiving the prior written consent of NYU to
said release or disclosure . This obligation of confidentiality shall not apply to any
component of the NYU Information which is party of the public domain prior to the
Effective Date of this Agreement, or which becomes a part of the public domain not due
to some unauthorized act by or omission of CORPORATION after the Effective Date of this
Agreement, or which is disclosed to CORPORATION by a third party who has the right to
make such disclosure, or the disclosure of which is required by law or judicial order,
including the rules and regulations of the Securities and Exchange Commission.
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12. USE OF NAME
Without the prior written consent of the other party, neither CORPORATION nor NYU shall
use the name of the other party or any adaptation thereof or of any staff member,
employee or student, of the other party:
i) in any product labeling, advertising, promotional or sales literature;
ii) in connection with any public offering or private placement documentation or
prospectus or in conjunction with any application for regulatory approval, unless
disclosure is otherwise required by law, in which case either party may make factual
statements concerning the Agreement or file copies of the Agreement after providing the
other party with an opportunity to comment and reasonable time within which to do so on
such statement in draft. Except as provided herein, neither NYU nor CORPORATION will
issue public announcements about this Agreement or the status or existence of the NYU
Research Project without prior written approval of the other party.
13. MISCELLANEOUS
a. In carrying out this Agreement the parties shall comply with all local, state and
federal laws and regulation including but not limited to, the provisions of Title 35
United States Code Section 200 et seq. and 15 CFR Section 368 et seq.
b. If any provision this Agreement is determined to be invalid or void, the remaining
provisions shall remain in effect.
c. This Agreement shall be deemed to have been made in the State of New York and shall be
governed and interpreted in all respects under the laws of the State of New York.
d. Any dispute arising under this Agreement shall be resolved in an action in the courts
of New York State or the federal courts located in New York State, and the parties
hereby consent to personal jurisdiction of such courts in any such action.
e. All payments or notices required or permitted to be given under this Agreement shall be
given in writing and shall be effective when either personally delivered or deposited,
postage prepaid, in the United States registered or certified mail, addressed as
follows:
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To NYU: New York University School of Medicine
Office of Industrial Liaison
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx Xxxxxxxxxx
Executive Director,
Industrial Liaison/Technology Transfer
and
Office of Legal Counsel
New York University
Xxxxx Library
00 Xxxxxxxxxx Xxxxxx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx X. Xxxxxxx
Vice Xxxx and Senior Counsel for
Medical School Affairs
To CORPORATION:
Xxx Xxxxx
Xxxxxx Capital
000 Xxxxxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxx, XX 00000
and
Xxxxxx Xxxxxxx, Esq.
Xxxxxx XxXxxxxxx & Fish LLP
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
or such other address or addresses as either party may be hereafter specify by written
notice to the other. Such notices and communications shall be deemed effective on the
date of delivery or fourteen (14) days after having been sent by registered or
certified mail, whichever is earlier.
f. This Agreement (and the annexed Appendices) constitute the entire Agreement between the
parties and no variation, modifications or waiver of any of the terms or conditions
hereof shall be deemed valid unless made in writing and signed by both parties hereto.
This Agreement supersedes any and all prior agreements or understandings, whether oral
or written, between CORPORATION and NYU.
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g. No waiver by either party of any non-performance or violation by the other party of any
of the covenants, obligations or agreements of such other party hereunder shall be
deemed to be waiver of any subsequent violation or non-performance of the same or any
other covenant, agreement or obligation, nor shall forbearance by any party be deemed
to be a waiver by such party of its rights or remedies with respect to such violation
or non-performance.
h. The descriptive headings contained in this Agreement are included for convenience and
reference only and shall not be held to expand, modify or aid in the interpretation,
construction or meaning of this Agreement.
i. It is not the intent of the parties to create a partnership or joint venture or to
assume partnership responsibility or liability. The obligations of the parties shall be
limited to those set out herein and such obligations shall be several and not joint.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement effective as of the
date and year first above written.
NEW YORK UNIVERSITY
By: /s/ Xxxxx Xxxxxxxxxx
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Xxxxx Xxxxxxxxxx
Executive Director,
Industrial Liaison/Technology Transfer
Date: 9/6/01
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CORPORATION
By: /s/ Xxxx Xxxxxxxxxx
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Name: Xxxx Xxxxxxxxxx
Title: Chief Executive Officer & Chairman
Date: 1/24/02
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